The procedure to be followed in requesting determination of entitlement by the Commissioner depends on the relevant statutory provisions. Generally for applications entitlement disputes will be raised under section 36 but may be raised under section 32 (if solely involving a dispute between joint applicants) or in section 59 oppositions. For patents usually a request is made under section 191A but may be made under section 35 if a patent has been revoked after an offer to surrender.

Note that while section 32 and section 36 permit consideration of the entitlement of an invention disclosed in an application, section 35, section 59 and section 191A are limited to determinations on the basis of the invention claimed. Also a request may be made under section 32 or section 36 whether or not the application has lapsed.

For the procedure for section 32 requests and their determination see 7.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners.

For the procedure for section 59 oppositions and their determination see 7.2.1 Section 59 - Opposition to Grant of a Standard Patent.

A request under section 36 or section 35 must comply with reg 3.7, that is, be:

in the approved form; and
have with it a notice by the applicant stating the grounds on which the application is made.

For section 191A a request must also be in the approved form (see reg 10.7). This requires that the proposed rectification of the register be identified and the reasons for the proposed rectification given. A request under section 191A will usually be advertised (see 7.10.3.1 Procedure on Receipt of an Application for Recitification) however a declaration or rectification of the register cannot proceed while relevant proceedings in relation to the patent are pending.

In all cases it is usual for evidence to be filed with the request. Processing thereafter will depend on whether the request is filed by the applicant or patentee or by a third party. If the latter, the applicant or patentee (and any other party) will be provided a copy of the request as soon as practicable and asked to indicate whether they wish to contest the request.

Where the request is not contested, a delegate of the Commissioner will then proceed to determine the request. They may require that additional submissions or evidence be filed before making the determination.

Where the request is contested, including where a person requests to be heard under section 191A or reg 10.7, the practice and procedure to be followed is determined by the Commissioner in accordance with reg 22.24 and directions to the parties will be made accordingly. This usually will involve the opportunity for the parties to file evidence in which case the following applies.

Evidence

Note: As of 15 April 2013, any evidence and the summaries of submissions for an oral hearing must be filed electronically with IP Australia by means approved by the Commissioner.

Physical evidence should not be filed unless requested or directed by the Commissioner.

The parties will be asked to indicate if they wish to file evidence.

A party intending to file evidence will be required to specify the nature and significance of the evidence, and how long they will need to prepare the evidence. A delegate will consider the information, and propose a direction. Where a direction is given for a party to file evidence, the other party will normally be provided with a period in which to file responding evidence.

As noted in Mine Site Technologies Pty Ltd v R F Industries Pty Limited [2021] APO 21 at [49] and [50], the principles for filing evidence in substantive oppositions under Reg 5.9 “provide appropriate guidance for the exercise of discretion under regulation 22.24” in determining extensions of time to file evidence in entitlement disputes or disputes between applicants. Accordingly, absent compelling reasons to the contrary, the Commissioner will assess extensions of time to file evidence in entitlement disputes or disputes between applicants/co-owners using principles developed for assessing extensions according to Reg 5.9.

Physical evidence

Physical evidence should not be filed. Rather, the documentary evidence should include a description of the physical item including, as appropriate, a photograph or video recording as well as an indication of the place at which the item may be inspected.

The Commissioner may subsequently order inspection of the item or direct that it be filed, as the Commissioner determines to be appropriate.

Potential Agent or Attorney Conflicts

Occasionally entitlement disputes can lead to apparent conflicts of interest in attorney or agent representation. Clearly it is inappropriate for an attorney to represent both the Applicant/Patentee and the Requestor in an entitlement dispute, for example where an employee or director of the Applicant becomes the Requestor. Difficulties can arise where the Applicant/Patentee is a corporation that has been deregistered, and thereby no longer legally subsists, and the current agent of record is left in place, but that agent subsequently seeks to represent the interests of a third-party claiming entitlement to the application/patent.

Although it is not the Commissioner’s role to advise of or inform parties of apparent conflicts of interests concerning agents, the fact such a conflict potentially exists may have significant ramifications in ensuring procedural fairness is met. Where the Commissioner notices an apparent conflict of interest due to representation, it will be brought to the attention of the parties with a request that the conflict be resolved or advice from the parties that no conflict in fact exists, before proceeding.

In particular, a currently listed agent of a corporation that has been deregistered should seek independent legal advice regarding any conflict of interest before seeking to represent a third-party claiming entitlement to an application/patent that is currently recorded in the name of the now deregistered corporation.

The Commissioner may refer any real or apparent conflict of interest identified to the attention of the Trans-Tasman IP Attorneys Board, for any further action that the board deems appropriate.